Ex Parte Ehrenschwender et al

Patent Trial and Appeal Board

Dec 19, 2018

12293203 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/293,203 02/26/2009
95683 7590 12/21/2018
Ley dig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Dieter Ehrenschwender
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
810743 8583
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
12/21/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETER EHRENSCHWENDER, GERHARD HENKEL,
STEP AN KALCK, and REIKO KERN
Appeal2017-002613
Application 12/293 ,203 1
Technology Center 3600
Before DENISE M. POTHIER, SCOTT B. HOW ARD, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 20 and 39-48. Claims 1-19 and 21-38
have been canceled. App. Br. 17. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Deutsche
Telekom AG. App. Br. 1.
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Application 12/293,203
THE CLAIMED INVENTION
Appellants' claimed invention relates to "pseudonymizing digital data
records from a source system that are directed to a destination system,"
where "[p ]seudonymization is a process of modifying person-specific (i.e.,
personal) data by using an assignment rule in such a way that the individual
data pertaining to personal or material circumstances can no longer be
attributed to an individual person without knowledge or use of the
assignment rule." Spec. ,r,r 3--4.2 Claim 20 is illustrative of the subject
matter of the appeal and is reproduced below.
20. A method for pseudonymizing digital data records for
transmission from a source computing system to a destination
computing system, the method comprising:
receiving, by a client component of an identity protector
system, person-specific data from a source computing system
provided with a source identifier, wherein the person specific
data comprises unique identifiers corresponding to a person;
generating, by the client component of the identity
protector system, a pre-pseudonym (PI) based on the unique
identifiers and a protected hash function;
sending, by the client component of the identity protector
system, the PI with the source identifier to the source
computing system;
erasing, by the client component of the identity protector
system, the person-specific data from the client component of
the identity protector system;
2 The instant application was filed with a original specification ("Original
Spec."), a Preliminary Amendment to the original specification, and a clean
copy of the Specification as amended by the Preliminary Specification.
Unless otherwise indicated, all citations to the Specification ("Spec.") are to
the clean version of the substitute specification.
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receiving, by a master component of the identity
protector system, the PI with the source identifier from the
source computing system;
generating, by the master component of the identity
protector system, a pseudonym (PPI) based on the PI and the
source ID, wherein generating the PPI is performed in response
to a request for possible re-identification for a data record
corresponding to the source identifier from the destination
computing system; and
transmitting, by the master component of the identity
protector system, the PPI to the destination computing system;
and
storing, at a trusted database component of the identity
protector system, an assignment of the PPI to the PI and the
source ID to facilitate re-identification for the data record
corresponding to the source identifier.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 20 and 39--48 under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter.
(2) The Examiner rejected claims 20 and 39--48 under 35 U.S.C.
§ 112, second paragraph as being indefinite for failing to particularly point
out and distinctly claim the subject matter Appellants regard as their
invention.
(3) The Examiner rejected claims 20, 39--41, 43--46, and 48 under
35 U.S.C. § I03(a) as being unpatentable over the combination of Gilbert et
al. (US 2002/0073138 Al; published June 13, 2002) (hereinafter "Gilbert")
and Thielscher et al. (US 2005/0043964 Al; published Feb. 24, 2005)
(hereinafter "Thielscher").
(4) The Examiner rejected claims 42 and 47 under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Gilbert, Thielscher,
and Sudia (US 5,841,865; issued Nov. 24, 1998).
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ISSUES
The dispositive issues for this appeal are:
(1) Whether claims 20 and 39--48 amount to significantly more
than the abstract idea to which the Examiner finds that they are directed;
(2) Whether claims 20 and 39--48 are indefinite with respect to the
term "pre-pseudonym"; and
(3) Whether the combination of Gilbert and Thielscher teaches or
suggests a "master component" that "generat[ es] . . . a pseudonym (PPI)
based on ... [a pre-pseudonym (PI)] and [a] source ID" as recited in
independent claim 20 and similarly recited in independent claim 44?
ANALYSIS
We find Appellants' arguments discussed here persuasive.
(1) Whether claims 20 and 39-48 amount to significantly more
Appellants contend the Examiner improperly rejected claim 20 under
35 U.S.C. § 101. 3 See App. Br. 4--9; Reply Br. 2-5. Section 101 of the
Patent Act provides that "[ w ]hoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title." 35 U.S.C. § 101. The Supreme
3 Appellants argue the rejected claims (i.e., claims 20 and 39--48) as a group.
Thus, we decide the appeal of the§ 101 rejection on the basis of
representative claim 20, and refer to the rejected claims collectively herein
as "the claims." See 37 C.F.R. § 4I.37(c)(l)(iv); In re King, 801 F.2d 1324,
1325 (Fed. Cir. 1986).
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Court has explained that this provision is subject to a long-standing, implicit
exception that abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014). The Court has set forth a two-part
inquiry to determine whether this exception applies. The first part is to
determine if the claim at issue is directed to an abstract idea. Id. at 2355.
Second, if the claim is directed to an abstract idea, we consider the elements
of the claim "both individually and as an ordered combination to determine
whether the additional elements transform the nature of the claim into a
patent-eligible application," so as to ensure the claims amount to
"significantly more" than the abstract idea. Alice, 134 S. Ct. at 2355
( quotation marks omitted) ( quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72 (2012)); id. at 2357.
The Examiner finds that the claims "are directed to the abstract idea of
reorganizing and extracting data using mathematics or rules, such as the
hash function." Final Act. 2; see also Ans. 3 (citing Digitech Image Tech.,
LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)).
We begin our analysis for a review of the Examiner's determination
regarding Alice step two, which is dispositive. The Examiner determines
that "[ t ]he claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception." Final Act. 2-3.
Instead, the Examiner further determines that the claimed steps "perform
purely generic computer functions" ( e.g., "sending, receiving, storing and
erasing data"), which are "well-understood and commonly implemented
computer functions." Id. at 3; see also Ans. 4.
Appellants argue that the Examiner "does not set forth an analysis"
supporting the Examiner's finding that the claims are not significantly more
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than the abstract idea. App. Br. 6. Put differently, Appellants argue that the
Examiner "[im Jproper[ly] ... allege[ s] that the claims contain an abstract
idea and then make[ s] a conclusory allegation that the claims do not recite
'sufficiently more' because the other individual steps are 'well-understood."'
Reply Br. 4--5 (citing Bascom Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016)).
Appellants also argue that the Examiner fails to consider the claim
limitations as a whole, including failing to consider "the practical
environment in which" the claim limitations function. App. Br. 7; Reply
Br. 5. Appellants argue that the claims as a whole "overcome a problem
specifically arising in the realm of computer networks-i.e., relating to
anonymizing digital data records via a two-step pre-pseudonymization plus
pseudonymization process to protect user privacy during computer-to-
computer communications." Id. at 8-9 ( citing Spec. ,r 42).
We agree with Appellants that the Examiner has not set forth a prima
facie case that the claims constitute patent ineligible subject matter. More
specifically, we agree that the Examiner does not sufficiently explain why
the claims purportedly do not amount to significantly more than the abstract
idea. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability. "). Rather, the
Examiner merely states that the individual limitations amount to generic
computer functions, which is insufficient. Bascom, 827 F.3d at 1350 ("The
inventive concept inquiry requires more than recognizing that each claim
element, by itself, was known in the art.").
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In addition, we agree with Appellants that the claims include an
"inventive concept-i.e., an element or combination of elements that is
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself." Alice, 134 S. Ct. at 2355
(quotation marks omitted) (quoting Mayo, Inc., 566 U.S. at 72-73). In
particular, we find that the claims here are like those in Bascom, where the
Federal Circuit found an inventive concept. Bascom, 827 F.3d at 1349-50.
In Bascom, the claims were directed to the inventive concept of
providing customizable Internet-content filtering which, under Step 2 of the
Alice analysis, was found to transform the abstract idea of filtering content
into a patent-eligible invention. Id. at 1350. Although the underlying idea
of filtering Internet content was deemed to be abstract, under step 2 of the
Alice analysis, the claims carved out a specific location for the filtering
system, namely a remote Internet service provider (ISP) server, and required
the filtering system to give users the ability to customize filtering for their
individual network accounts. Id. In so doing, the Federal Circuit found that
the claims "improve[d] an existing technological process." Id. at 1351
(citing Alice, 134 S. Ct. at 2357).
Here, when considered as an ordered combination, as in Bascom,
claim 20 recites an inventive concept sufficient to transform the purported
abstract idea into a patent-eligible application, namely by improving
anonymizing of digital data records by employing a two-step pre-
pseudonymization plus pseudonymization process to protect user privacy
during computer-to-computer communications. App. Br. 17 (Claims App'x)
(reciting claim 20); see also Bascom, 827 F.3d at 1349-52. This
characterization is also consistent with the Specification. Spec. ,r 48.
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This technological improvement, then, adds significantly more to the
purported abstract idea, thus rendering the claimed invention patent-eligible.
See Alice, 134 S. Ct. at 2358-59 (explaining why the claims in Diamond v.
Diehr, 450 U.S. 175 (1981) were eligible because they improved an existing
technological process-not because they were implemented on a computer);
see also Bascom, 827 F.3d at 1351 (explaining that the claimed invention
was eligible because it was a technology-based solution to filter Internet-
based content that overcame existing problems with other Internet filtering
systems, and was not merely an abstract-idea-based solution implemented
conventionally with generic technical components). Furthermore, "our
conclusion that the claims are directed to an improvement of an existing
technology is bolstered by the [S]pecification's teachings that the claimed
invention achieves other benefits over conventional" pseudonymization,
such as improved prevention of an uncontrolled re-identification in the
destination system. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327,
1337 (Fed. Cir. 2016); Spec. ,r 48.
Accordingly, we do not sustain the Examiner's§ 101 rejection of
claim 20, as well as claims 39--48 grouped therewith.
(2) Whether claims 20 and 39-48 are indefinite
Appellants argue that claims 20 and 39--48 are not indefinite with
respect to the term "pre-pseudonym." App. Br. 9-10; Reply Br. 5---6. More
specifically, Appellants argue that the term "pre-pseudonym" is definite
because "[ o ]ne of ordinary skill in the art would readily understand that, in
the context of the presently claimed invention, a 'pre-pseudonym' ... is an
anonymized parameter generated [by] the client component of the identity
protector system (e.g., a T-IP client) pursuant to a 'pre-pseudonymization'
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process." App. Br. 9--10; see also id. (citing Original Spec. ,r,r 31-39, 54--
64) (disclosing the claimed pseudonymization process). Appellants argue
that in this context "[t]he claim language recites that the pre-pseudonym (PI)
is generated based on the unique identifiers and a protected hash function,
and the original [S]pecification . . . provide[ s] examples where pre-
pseudonyms are generated based on name, birth date, and other unique
identifie[r ]s." App. Br. 9 ( citing Original Spec. ,r,r 32, 56).
The Examiner finds that the term "pre-pseudonym" is indefinite
"because the original [S]pecification does not contain a lexicographic
definition for the terms with the required clarity, deliberateness, and
precision." Ans. 5. The Examiner also finds the portions of the
Specification and claim language, cited by Appellants, unhelpful as "this
information merely provides context as to how the pre-pseudonym is created
but not what it is." Id.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the [S]pecification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted); see also Ex parte Miyazaki, 89 USPQ2d 1207, 1210-13 (BPAI
2008) (precedential) (applying the Orthokinetics standard).
We agree with Appellants that one of ordinary skill in the art would
understand the scope of what is being claimed in claims 20 and 39--48. For
example, we agree that one of skill in the art would understand that pre-
pseudonym is an anonymized parameter generated by the client component
of the claimed system. App. Br. 17 (Claims App'x) (reciting claim 20);
Spec. ,r,r 3 8 ( disclosing that the "client receives person-specific data from a
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source system ... [, and f]rom the name, birth date, and other unique
identifiers, it generates a pre-pseudonym (PI)"), 55 ( disclosing "for the pre-
pseudonym, the name is used in conjunction with other identification
features, such as birth date, place of birth, and other unique identifiers
... [, and] are modified in the ... client by an algorithm in such a way that
the resulting character string does not make any sense to an attacker"). We
also find that the Specification's disclosure of how the pre-pseudonym is
created serves to help one of ordinary skill in the art understand what is
claimed, contrary to the Examiner's finding. Id.
Accordingly, we do not sustain this rejection.
(3) Whether Gilbert and Thielscher teach the master component
Appellants argue that the combination of Gilbert and Thielscher fails
to teach or suggest a "master component" that "generat[ es] . . . a pseudonym
(PPI) based on ... [a pre-pseudonym (PI)] and [a] source ID," as recited in
independent claim 20 and recited in commensurate scope in independent
claim 44. App. Br. 10-12; Reply Br. 7-8. More specifically, Appellants
argue that Gilbert's server 14, which the Examiner maps to the "master
component," does not "perform[] any pseudonymization operations," let
alone the disputed limitation. App. Br. 11. According to Appellants,
Gilbert's server 14 instead generates an identifier 199, which "is an arbitrary
identifier assigned to master records to distinguish them from one another."
Id. at 12 (citing Gilbert ,r 88). According to Appellants, Gilbert's identifier
199 most certainly "is not a pseudonym generated based on [a] pre-
pseudonym PI and [a] source ID," as claimed. Id. at 11-12 (citing Gilbert
,r 88). For example, Appellants argue Gilbert's "normalized identification
(ID) data field" cannot be the claimed "pre-pseudonym (PI)" used in
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generating the pseudonym (PPI) because the normalized identification (ID)
data field is not "generated based on unique identifiers and a protected hash
function," as claimed. Reply Br. 8.
The Examiner finds that the combination of Gilbert and Thielscher,
and Gilbert in particular, teaches or suggests the disputed limitation. Ans.
6-8. More specifically, the Examiner finds that Gilbert discloses a master
component which generates a pseudonym (i.e., identifier 199) based on a
pre-pseudonym (i.e., a "normalized identification (ID) data field") and a
source ID (i.e., a "match code"). Ans. 6-7 ( citing Gilbert ,r,r 50, 56, 88).
The Examiner also finds that Gilbert's "identifier 199 is generated at a
probabilistic linkage step in the matching process 80 which necessarily
occurs after data is de-identified and encoded which is necessarily based on
the 'normalized identification (ID) data field[s]' (the pre-pseudonym (PI))."
Id. at 7-8 ( citing Gilbert ,r,r 50, 54, 59).
We are persuaded by Appellants' arguments. The portions of Gilbert
and Thielscher cited by the Examiner fail to teach or suggest the disputed
limitation. Contrary to the Examiner's findings, the cited portions of Gilbert
do not teach or suggest that identifier 199 (i.e., mapped to pseudonym (PPI))
is generated based on a pre-pseudonym (PI), which is based on unique
identifiers and a protected hash function in accordance with the claims. See
Gilbert ,r,r 50, 54, 59, 88. We also agree with Appellants that Gilbert's
normalized identification (ID) data fields have not been shown to disclose a
pre-pseudonym (PI), as the normalized identification (ID) data fields are not
necessarily based on unique identifiers and a protected hash function as
claim 20 requires. Id. ,r 50. Rather, these fields comprise identifiers, some
of which may not be unique, and are not generated using a hash function.
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Id.; cf id. ,r 56 (disclosing the use of hashed identifiers as match codes,
which the Examiner maps to Source IDs).
Accordingly, we do not sustain the Examiner's§ 103 rejection of
independent claims 20 and 44, as well as claims 39-41, 43, 45, 46, and 48,
as they depend, directly or indirectly from one of these independent claims.
We also do not sustain the Examiner's § 10 3 rejection of claims 4 2 and 4 7,
as each of these claims depend, directly or indirectly, from one of the above
independent claims.
DECISION
We reverse the Examiner's decision rejecting claims 20 and 39-48.
REVERSED
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